8 ms·

US Supreme Court Will Hear Case Re: Standards for Software Patent Eligibility

156 points by jakewalker 13y ago

jakewalker 13y ago
Because it is not (yet) reflected on the SCOTUSblog page, here is the Order granting certiorari: http://www.supremecourt.gov/orders/courtorders/120613.zr_4g15.pdf http://www.supremecourt.gov/orders/courtorders/120613.zr_4g1... The actual link above links to a number of amicus briefs urging the court to grant (or not grant) review, and would be good reading to understand the issues in the case. Links to Coverage: http://www.scotusblog.com/2013/12/court-to-rule-on-patent-rights/ http://www.scotusblog.com/2013/12/court-to-rule-on-patent-ri... http://www.reuters.com/article/2013/12/06/us-usa-court-software-idUSBRE9B50QJ20131206 http://www.reuters.com/article/2013/12/06/us-usa-court-softw...
leeoniya 13y ago
can you imagine if every RFC had been turned into a patent where we would be today? i think this alone should be telling of how every software patent rides on the goodwill of a culture of open source and standardization that has existed for decades (when true innovation was taking place). it's complete insanity that patents can be granted for inventions which rely so fundamentally on an infrastructure which could have only been built so successfully - and explicitly - without them.
- salient 13y ago
  There were some interesting discussions about the abolition of patents in Europe in the 19th century, that speak to what you're saying: http://www.techdirt.com/articles/20130503/17414322946/discussions-abolition-patents-uk-france-germany-netherlands-1869.shtml http://www.techdirt.com/articles/20130503/17414322946/discus...
- rayiner 13y ago
  A substantial part of the work that resulted in the RFCs happened pursuant to federal funding before December 1980. This is significant because prior to December 1980, the enactment of the Bayh-Dole Act, inventions developed in federally funded programs had to be assigned to the government. Therefore, there was little incentive to patent those inventions. If the developments had happened today, at MIT, BBN, etc, they would be patented.
  - malandrew 13y ago
    Are there any studies that do a deep analysis of the impact of the Bayh-Dole Act? Were there any benefits? If not, is this an act that we should lobby to undo?
baldfat 13y ago
There needs to be more money spent on staff at the US Patent Office so they don't just rubber stamp patents and let the courts decide. 1) Something needs to be a true innovation to be a patent 2) The process should take a lot of man hours. I don't feel either of those things happen due to shortage of staffing and a wild everything is possibly patentable.
- bzalasky 13y ago
  I'm adamantly against software patents, however, when it comes to chemistry patents, I know it's not a rubber stamp process. It can take a couple years to get a patent, and lots of patents are rejected. A lot of the process involves the examiner stripping out claims that are invalid (the parties seeking the patents generally want them to be broader than they really should be).
  - danielweber 13y ago
    I've seen software patents get both rejected and approved. It is by no means a rubber-stamp process.
    - delackner 13y ago
      As holder of a US patent on a purely software "invention" (aka, some game I wrote) I can categorically state that the only way it could have been granted was that it was rubber stamped because it is just a lot of talk about the algorithms I wrote, executed on a portable game system.
      - hdevalence 13y ago
        Out of curiosity, why did you get the patent?
        delackner 13y ago
        CEO loved the idea of getting a patent because he thought it would make us look impressive and it would defend us in advance if someone else made a similar thing and tried to attack us with their own BS patent. Makes me sad when i consider the comparison with my grandfather's multiple rounds of back and forth with the PTO fighting to finally get a patent on a mechanical device. Comparitively yes, they rubber stamp software patents because they clearly dont understand the art. They kind of understand more traditional (aka real) inventions.
twoodfin 13y ago
IANAL, but I'm surprised by the EFF's amicus brief. A large portion of it is an enumeration of the deleterious effects of NPE "trolls", but from my understanding of the case, it's purely about establishing better guidance on what is or isn't patentable under section 101. SCOTUS seems unlikely to be moved by the pain caused by NPE's, when Congress could readily change how patent infringement or licensing works for PE's vs. NPE's if they considered it a serious problem. Obviously they still got the cert, though not of the particular case they wanted. I'm interested to hear how some of the much brighter legal minds on hn would handicap this case. My uneducated guess is that the patentability of software will largely survive, but the Court will try to formulate a test designed to exclude claims that would be clearly too abstract were they not "instantiated" on a computer. Something like the Amazon 1-click patent would probably survive, while the Alice patents would not.
- tesseractive 13y ago
  Justices like Breyer often reference data about the positive or negative effects of an interpretation of the law in their decisions.
- WildUtah 13y ago
  Last time the patentability of business methods came around was 2010's Bilski v. Kappos case [0]. Software was discussed as a related matter. The Supreme Court rejected any specific test as dispositive for patentability. The Court of Appeals for the Federal Circuit [1] had advanced a "machine or transformation" test as the standard for abstraction and unpatentability. That test would have required that a patent specify a specific machine or a transformation of a form or state of matter somehow in order to be sufficiently concrete. It was a vague test that would have allowed almost anything not as awful as Bilsky's application, which essentially claimed various century old hedging strategies whenever implemented on a computer. The Supreme Court ruled 9-0 that the test was an indicator of abstraction but not definitive. It also ruled 9-0 that Bilsky's patent was garbage. The patentability of business methods in general was discussed in the opinions. The great John Paul Stevens [2] wrote the dissent in Diamond v. Diehr [3] thirty years prior explaining why and how software patents were terrible and should never be allowed, but only gained four votes. He wrote an opinion explaining again why software patents should not be allowed and gained four votes again in Bilsky in a court where every member but him had been replaced in the interim. Unfortunately Stevens is retired (it's well earned -- he's 93) and the leading intellectual property expert on the court is now Breyer. Breyer wrote the dissent against effectively permanent copyright terms in Eldred v. Ashcroft. Sotomayor and Ginsberg have also been in the Stevens camp on patentability. New Justice Elena Kagan usually votes with those three. So we can hope for four votes for software freedom once again. There were also four votes in Bilsky for patenting software, though not with any visible enthusiasm. They were Roberts, Alito, Kennedy, and Thomas. Finally Scalia refused to join just one opinion and split between the two without addressing the serious ongoing questions of patentable subject matter. So the final tally was 4-1-4. The CAFC split 5-5 on the Alice [4] case the Supreme Court just decided to hear. The split was similar to the Supreme Court in Bilsky and did not resolve any simmering issues because of the even split. Note that even the Google and EFF briefs on the Alice case didn't suggest outright abolition of software patents at the CAFC. Justice Stevens may have seemed like a lonely crusader by 2010. It may be that the enemies of our industry have gained so much power in Washington and the patent bar that the best we can hope for is a slow, slow rollback. Certainly there are a lot of people making billions without the trouble of actually building anything who can spend their efforts to keep the racket going. Without the need to make things, they can lobby full time to continue getting rich at the expense of innovators and startups and the public through software patents. The most likely result here is a 4-1-4 split again, unless a new way to appeal to Scalia can be found. Real progress from the Supreme Court probably requires a new justice; the current pattern indicates that pragmatic Democratic appointee is much more likely to abolish software patents and a movement Republican appointee is most likely to definitively endorse them, but individual justices can always assert their own visions once appointed. [0] http://en.wikipedia.org/wiki/Bilski_v._Kappos http://en.wikipedia.org/wiki/Bilski_v._Kappos [1] http://en.wikipedia.org/wiki/John_Paul_Stevens http://en.wikipedia.org/wiki/John_Paul_Stevens [2] http://en.wikipedia.org/wiki/United_States_Court_of_Appeals_for_the_Federal_Circuit http://en.wikipedia.org/wiki/United_States_Court_of_Appeals_... [3] http://en.wikipedia.org/wiki/Diamond_v._Diehr http://en.wikipedia.org/wiki/Diamond_v._Diehr [4] http://en.swpat.org/wiki/CLS_Bank_v._Alice_(2012,_USA) http://en.swpat.org/wiki/CLS_Bank_v._Alice_(2012,_USA)
shmerl 13y ago
So this is about functional claiming in patents?
xutopia 13y ago
That class action lawsuit is horrible... 23andme is awesome and I love having it. I never felt cheated or any of that because I read it carefully.
- dragonwriter 13y ago
  Reading it carefully doesn't help if the information provided isn't accurate.

156 points by jakewalker 13y ago

Because it is not (yet) reflected on the SCOTUSblog page, here is the Order granting certiorari: http://www.supremecourt.gov/orders/courtorders/120613.zr_4g15.pdf http://www.supremecourt.gov/orders/courtorders/120613.zr_4g1... The actual link above links to a number of amicus briefs urging the court to grant (or not grant) review, and would be good reading to understand the issues in the case. Links to Coverage: http://www.scotusblog.com/2013/12/court-to-rule-on-patent-rights/ http://www.scotusblog.com/2013/12/court-to-rule-on-patent-ri... http://www.reuters.com/article/2013/12/06/us-usa-court-software-idUSBRE9B50QJ20131206 http://www.reuters.com/article/2013/12/06/us-usa-court-softw...

leeoniya 13y ago

can you imagine if every RFC had been turned into a patent where we would be today? i think this alone should be telling of how every software patent rides on the goodwill of a culture of open source and standardization that has existed for decades (when true innovation was taking place). it's complete insanity that patents can be granted for inventions which rely so fundamentally on an infrastructure which could have only been built so successfully - and explicitly - without them.

salient 13y ago
There were some interesting discussions about the abolition of patents in Europe in the 19th century, that speak to what you're saying: http://www.techdirt.com/articles/20130503/17414322946/discussions-abolition-patents-uk-france-germany-netherlands-1869.shtml http://www.techdirt.com/articles/20130503/17414322946/discus...
rayiner 13y ago
A substantial part of the work that resulted in the RFCs happened pursuant to federal funding before December 1980. This is significant because prior to December 1980, the enactment of the Bayh-Dole Act, inventions developed in federally funded programs had to be assigned to the government. Therefore, there was little incentive to patent those inventions. If the developments had happened today, at MIT, BBN, etc, they would be patented.
- malandrew 13y ago
  Are there any studies that do a deep analysis of the impact of the Bayh-Dole Act? Were there any benefits? If not, is this an act that we should lobby to undo?

baldfat 13y ago

There needs to be more money spent on staff at the US Patent Office so they don't just rubber stamp patents and let the courts decide. 1) Something needs to be a true innovation to be a patent 2) The process should take a lot of man hours. I don't feel either of those things happen due to shortage of staffing and a wild everything is possibly patentable.

bzalasky 13y ago
I'm adamantly against software patents, however, when it comes to chemistry patents, I know it's not a rubber stamp process. It can take a couple years to get a patent, and lots of patents are rejected. A lot of the process involves the examiner stripping out claims that are invalid (the parties seeking the patents generally want them to be broader than they really should be).
- danielweber 13y ago
  I've seen software patents get both rejected and approved. It is by no means a rubber-stamp process.
  - delackner 13y ago
    As holder of a US patent on a purely software "invention" (aka, some game I wrote) I can categorically state that the only way it could have been granted was that it was rubber stamped because it is just a lot of talk about the algorithms I wrote, executed on a portable game system.
    - hdevalence 13y ago
      Out of curiosity, why did you get the patent?
      - delackner 13y ago
        CEO loved the idea of getting a patent because he thought it would make us look impressive and it would defend us in advance if someone else made a similar thing and tried to attack us with their own BS patent. Makes me sad when i consider the comparison with my grandfather's multiple rounds of back and forth with the PTO fighting to finally get a patent on a mechanical device. Comparitively yes, they rubber stamp software patents because they clearly dont understand the art. They kind of understand more traditional (aka real) inventions.

twoodfin 13y ago

IANAL, but I'm surprised by the EFF's amicus brief. A large portion of it is an enumeration of the deleterious effects of NPE "trolls", but from my understanding of the case, it's purely about establishing better guidance on what is or isn't patentable under section 101. SCOTUS seems unlikely to be moved by the pain caused by NPE's, when Congress could readily change how patent infringement or licensing works for PE's vs. NPE's if they considered it a serious problem. Obviously they still got the cert, though not of the particular case they wanted. I'm interested to hear how some of the much brighter legal minds on hn would handicap this case. My uneducated guess is that the patentability of software will largely survive, but the Court will try to formulate a test designed to exclude claims that would be clearly too abstract were they not "instantiated" on a computer. Something like the Amazon 1-click patent would probably survive, while the Alice patents would not.

tesseractive 13y ago
Justices like Breyer often reference data about the positive or negative effects of an interpretation of the law in their decisions.
WildUtah 13y ago
Last time the patentability of business methods came around was 2010's Bilski v. Kappos case [0]. Software was discussed as a related matter. The Supreme Court rejected any specific test as dispositive for patentability. The Court of Appeals for the Federal Circuit [1] had advanced a "machine or transformation" test as the standard for abstraction and unpatentability. That test would have required that a patent specify a specific machine or a transformation of a form or state of matter somehow in order to be sufficiently concrete. It was a vague test that would have allowed almost anything not as awful as Bilsky's application, which essentially claimed various century old hedging strategies whenever implemented on a computer. The Supreme Court ruled 9-0 that the test was an indicator of abstraction but not definitive. It also ruled 9-0 that Bilsky's patent was garbage. The patentability of business methods in general was discussed in the opinions. The great John Paul Stevens [2] wrote the dissent in Diamond v. Diehr [3] thirty years prior explaining why and how software patents were terrible and should never be allowed, but only gained four votes. He wrote an opinion explaining again why software patents should not be allowed and gained four votes again in Bilsky in a court where every member but him had been replaced in the interim. Unfortunately Stevens is retired (it's well earned -- he's 93) and the leading intellectual property expert on the court is now Breyer. Breyer wrote the dissent against effectively permanent copyright terms in Eldred v. Ashcroft. Sotomayor and Ginsberg have also been in the Stevens camp on patentability. New Justice Elena Kagan usually votes with those three. So we can hope for four votes for software freedom once again. There were also four votes in Bilsky for patenting software, though not with any visible enthusiasm. They were Roberts, Alito, Kennedy, and Thomas. Finally Scalia refused to join just one opinion and split between the two without addressing the serious ongoing questions of patentable subject matter. So the final tally was 4-1-4. The CAFC split 5-5 on the Alice [4] case the Supreme Court just decided to hear. The split was similar to the Supreme Court in Bilsky and did not resolve any simmering issues because of the even split. Note that even the Google and EFF briefs on the Alice case didn't suggest outright abolition of software patents at the CAFC. Justice Stevens may have seemed like a lonely crusader by 2010. It may be that the enemies of our industry have gained so much power in Washington and the patent bar that the best we can hope for is a slow, slow rollback. Certainly there are a lot of people making billions without the trouble of actually building anything who can spend their efforts to keep the racket going. Without the need to make things, they can lobby full time to continue getting rich at the expense of innovators and startups and the public through software patents. The most likely result here is a 4-1-4 split again, unless a new way to appeal to Scalia can be found. Real progress from the Supreme Court probably requires a new justice; the current pattern indicates that pragmatic Democratic appointee is much more likely to abolish software patents and a movement Republican appointee is most likely to definitively endorse them, but individual justices can always assert their own visions once appointed. [0] http://en.wikipedia.org/wiki/Bilski_v._Kappos http://en.wikipedia.org/wiki/Bilski_v._Kappos [1] http://en.wikipedia.org/wiki/John_Paul_Stevens http://en.wikipedia.org/wiki/John_Paul_Stevens [2] http://en.wikipedia.org/wiki/United_States_Court_of_Appeals_for_the_Federal_Circuit http://en.wikipedia.org/wiki/United_States_Court_of_Appeals_... [3] http://en.wikipedia.org/wiki/Diamond_v._Diehr http://en.wikipedia.org/wiki/Diamond_v._Diehr [4] http://en.swpat.org/wiki/CLS_Bank_v._Alice_(2012,_USA) http://en.swpat.org/wiki/CLS_Bank_v._Alice_(2012,_USA)

shmerl 13y ago

So this is about functional claiming in patents?

xutopia 13y ago

That class action lawsuit is horrible... 23andme is awesome and I love having it. I never felt cheated or any of that because I read it carefully.

dragonwriter 13y ago
Reading it carefully doesn't help if the information provided isn't accurate.